VITALIANO, District Judge.
David Tropp ("Tropp") owns two patents that describe a method of airline luggage screening through the use of a dual-access lock, which enables a traveler to secure his or her luggage while still permitting it to be accessed by a luggage screening entity with a master key. Travel Sentry, Inc. ("Travel Sentry") owns a trademark that it licenses to lock and luggage manufacturers and distributors for use on dual-access luggage locks. On December 4, 2006, Travel Sentry filed a complaint against Tropp in this Court seeking a declaratory judgment of noninfringement, invalidity and non-liability with respect to Tropp's patents; Tropp subsequently counterclaimed for infringement. See Case No. 06-cv-6415 (the "Travel Sentry Action"). On November 3, 2008, Tropp commenced a related action in this Court against more than a dozen luggage manufacturers and/or distributors which are licensed to use Travel Sentry's trademark (the "licensee defendants"), claiming infringement of the same patents. See Case No. 08-cv-4446 (the "Licensee Action").
In the Travel Sentry Action, Travel Sentry has moved for summary judgment, pursuant to Rule 56 of the Federal Rules of Civil Procedure, on noninfringement and, in the alternative, invalidity. Meanwhile, in the Licensee Action, the licensee defendants have moved for summary judgment on the ground that, pursuant to 28 U.S.C. § 1498(a), Tropp's patents are exclusively amenable to litigation in an action against the United States in the Court of Federal Claims; further, they recently requested permission from the Court to move for summary judgment on noninfringement as well.
For the reasons that follow, Travel Sentry's motion for summary judgment against Tropp on grounds of noninfringement is granted, and the Travel Sentry Action is dismissed. In light of this disposition, the Court orders Tropp to show cause why he should not be estopped from pursuing his infringement claims against the licensee defendants.
The two Tropp-owned patents at issue are: (1) U.S. Patent No. 7,021,537, filed
The 537 patent contains four independent claims: 1, 9, 14 and 10. The 728 patent contains two independent claims: 1 and 10. Claim 1 of the 537 patent recites:
The parties agree that this claim is representative of the independent claims of both patents.
The Transportation Security Administration ("TSA"), which is part of the United States Department of Homeland Security ("DHS"), controls airline luggage inspection and is the sole luggage screening entity in the United States. The TSA specifies all inspection procedures and exclusively bears the responsibility of deciding if, when and how any airline luggage is opened or inspected in this country. (TS 56.1 ¶ 12.) It is undisputed that, in the United States, the "luggage screening entity" recited in the 537 and 728 patents is the TSA.
On December 19, 2002 the TSA publicly announced that, as of January 1, 2003, it would begin screening 100% of checked airline luggage for flights originating in the United States, pursuant to a Congressional mandate ("Screening Mandate") instituted in response to the 9/11 terrorist attacks. (TS 56.1 ¶¶ 11, 37.)
John Vermilye ("Vermilye") is the founder and Chief Executive Officer of Travel Sentry. Vermilye began his career in the airline industry in 1972, working as an Air France baggage loader at Logan Airport in Boston, Massachusetts. Early on, Vermilye learned that United States Customs officers were tasked with opening and inspecting unclaimed luggage, and that, to facilitate their work, luggage lock master keys for the most commonly used luggage brands were collected on large key rings and used to open unclaimed luggage whenever possible. Between 1974 and 1980, Vermilye held various other positions at Logan, working as a ticket agent and in the airport control center. In 1980, he moved to a position in management at Eastern Airlines. During his eight years at Eastern, Vermilye gained more knowledge about and experience with security protocols, serving as the head of corporate baggage operations and chairing an international task force that developed baggage security procedures. Among other things, Vermilye was responsible for Eastern's Central Baggage Tracing ("CBT") facility at Miami Airport, where all of the unclaimed luggage from Eastern's network was collected and opened by airline staff; CBT personnel, much like the Customs officers at Logan with whom Vermilye had worked, attempted to access bags and identify their owners by using previously assembled sets of master luggage keys. (TS 56.1 ¶¶ 6, 7. 9, 10.)
In 1988, Vermilye became the manager of baggage operations for the International Air Transport Association in Geneva, Switzerland, where he wrote the standards for baggage handling for all airlines. (TS 56.1 ¶ 8.) In 2002, he was hired as a consultant by the TSA, where he provided assistance with, among other things, implementation of the Screening Mandate. At the TSA, Vermilye recognized that the agency faced significant challenges in attempting to comply with the Screening Mandate, in light of, among other things, the agency's standard practice and policy of breaking locks on luggage that required inspection. He anticipated that, if the lock-breaking approach was not refined or adjusted in the face of the dramatically increased volume of bags to be inspected, injuries suffered by luggage screeners and thefts of passengers' property would likely skyrocket. (TS 56.1 ¶ 13.)
Approximately two months later, Vermilye was formally assigned to assist the TSA with implementing its comprehensive baggage screening policy pursuant to the Screening Mandate. After he persuaded some higher-ups at the TSA that it would be worthwhile to collect a subset of master keys on a ring for screeners to use, Vermilye was tasked with "coordinat[ing] procurement plans for key sets." He contacted Rynn again in connection with the TSA key ring project in late November 2002, and met with him to inquire if Rynn was interested in being retained as a TSA contractor, to gather sets of commonly used luggage keys from manufacturers and assemble rings for TSA use at commercial airports in the United States. (TS 56.1 ¶¶ 18, 19; TS Reply 56.1 ¶ 18.) Rynn was amenable, and Rynn Luggage subsequently contracted to supply the TSA with approximately 1500 key rings ("TSA-Rynn Rings") prior to the Screening Mandate deadline of January 1, 2003. Rynn collected a set of about 35 master keys for each TSA-Rynn Ring, which Rynn and TSA staff estimated could open about 80% of baggage with integrated key locks. (TS 56.1 ¶¶ 20, 23; TS Reply 56.1 ¶ 20.) In December 2003, the TSA prepared instructions and guides for baggage screeners about making efforts to open locked bags with the keys on the TSA-Rynn Rings. (TS 56.1 ¶¶ 21, 22; TS Reply 56.1 ¶¶ 21, 22.)
The TSA-Rynn Ring project was in place by early January 2003, according to plan. However, Vermilye and others at the TSA viewed it as only a temporary solution to the formidable challenge posed by the Screening Mandate. The record reflects that, as of late November and December 2002, Vermilye had started to mull over and speak to others about the "Travel Sentry concept," which the parties agree "is a lock standard that enables the traveling public to lock their checked baggage during travel while still allowing the TSA to open the lock and search the bags as needed, and then re-lock them."
On or about January 10, 2003, Vermilye and Rynn met for a debriefing on the inception of the TSA's use of the TSA-Rynn Rings. According to Rynn, they also talked more about Vermilye's "Travel Sentry concept"; specifically, they discussed the prospect of a standard dual access lock, identifiable by a standardized indicia or logo, that would reduce the number of keys that screeners had to carry, and Vermilye told Rynn that he was considering simply licensing the concept rather than manufacturing or selling the locks himself. (TS 56.1 ¶ 28; TS Reply 56.1 ¶ 28.) On January 14, 2003, Vermilye went to see a patent attorney, Alicia Meros, for advice about how to protect the Travel Sentry concept as intellectual property, and asked her to perform a patent search on luggage locks. Within days of his meeting with Meros, at her suggestion, Vermilye wrote down descriptions of what the Travel Sentry concept was and when he had thought of it. (TS 56.1 ¶ 27; TS Reply 56.1 ¶ 27.)
Vermilye formally left the TSA on March 7, 2003, and devoted himself to pursuing the Travel Sentry concept. On March 27, 2003, Vermilye presented it at the Travel Goods Association ("TGA") convention in Las Vegas, Nevada. In his presentation materials, Vermilye envisioned that Travel Sentry's mark could be used on any manufacturer's luggage or lock instead of or in addition to the manufacturer's own mark, that the TSA would be willing to train its screeners to use a particular master key on locks demarcated by a Travel Sentry logo or mark, and that manufacturers could market locks and luggage to consumers on the basis that the TSA would recognize their locks and not break them. (TS 56.1 ¶ 30.)
Following the TGA convention, between March and August 2003, Vermilye met with luggage manufacturers and retailers in the United States and abroad to propose his system. By early August 2003, Vermilye had arranged for the creation of lock prototypes, and also claims to have received verbal assurances from the TSA that it would work with him to make the Travel Sentry concept a reality. (TS 56.1 ¶¶ 32-34; TS Reply 56.1 ¶¶ 32-34.) On August 20, 2003, the Wall Street Journal published an article entitled "Travel Watch: Making Up for the Blackout— Luggage Lockup," describing the Travel Sentry concept. On October 16, 2003, a "Memorandum of Understanding/Agreement Between the Transportation Security Administration and Travel Sentry Regarding Travel Sentry Certified Locks" ("MOU") was signed.
The MOU, which took effect on November 5, 2003, is the only written agreement between the TSA and Travel Sentry concerning Travel Sentry marked locks. The MOU states that the purpose of the agreement:
The MOU specifically enumerates the responsibilities of each party under the agreement. With respect to the TSA, the agreement provides that:
With respect to Travel Sentry's responsibilities, the MOU provides that:
Under "Other Provisions," the MOU again references the intent of the TSA to develop a publicly-issued standard for dual access locks, and notes that the "TSA also intends to provide the standard to third parties for independent testing and evaluation. Vendors wishing to have their locks evaluated against the standard will be expected to deal directly with the 3rd party evaluator." Finally, the MOU provides
By mid-November 2003, around the MOU's effective date, locks bearing Travel Sentry's logo—a red diamond—were finally made available to retail consumers, and hundreds of TSA-operated airports around the country had been supplied with master keys and tools to open Travel Sentry-marked locks. (TS 56.1 ¶¶ 35-37; TS Reply 56.1 ¶¶ 35-37.)
Travel Sentry holds the trademark, and under the terms of its Trademark License Agreement, certain lock manufacturers pay Travel Sentry an initial flat fee and then royalties for each lock bearing the mark that they sell to a distributor, as well as an annual fee and a fee for the master keys per assigned lock cylinder. Under the terms of Travel Sentry's Marketing License Agreement, certain lock distributors pay Travel Sentry an annual fee for the right to market a capped number of marked locks, and under the Limited Distribution Letter of Agreement, certain luggage manufacturers pay Travel Sentry an annual fee and royalties for each marked lock used in their luggage. Travel Sentry's website provides an explanation to consumers about how the concept works and identifies both online sites and brick-and-mortar establishments where Travel Sentry-marked products can be purchased. (TS 56.1 ¶¶ 79-81, 86; Tropp 56.1 ¶¶ 79-81, 86; TS Reply 56.1 ¶¶ 79-81, 86.) Travel Sentry retains rights to monitor the quality of the locks which bear its mark and controls the distribution of master keys, which have a distinctive shape and design.
In December 2002, Tropp was self-employed by his company HD Services, in the business of recovering abandoned property on a commission basis. According to Tropp, he read a news article about the Screening Mandate on the day that it was issued, December 19, 2002, and immediately conceived of his method for improving airline luggage inspection, at which point he wrote the idea down and drew rough sketches of the locks on two pages in his "invention journal." On January 13, 2003, Tropp sent an "Unsolicited Proposal" to the TSA, proposing an agreement by which he would exclusively provide a luggage master key to the TSA to use in its screening process. The TSA wrote back to Tropp on February 13, 2003, informing him that the proposal would be taken under consideration. About a month later, Tropp sent a follow-up email to the TSA regarding his Unsolicited Proposal, and on March 28, 2003, he received a response indicating that it did not meet the TSA lock standards then in effect. (TS 56.1 ¶¶ 39, 41-44.)
Tropp's activities in the spring and summer of 2003 with respect to his lock idea are hotly disputed. At one deposition, Tropp indicated that, between March and August 2003, he did not take steps to develop his idea further. However, at his next deposition, Tropp testified that during that period, he made several attempts to reach the TSA by telephone, spoke with a potential partner about building a business around his idea, met with a former Small Business Administration executive, and ran online searches on lock manufacturers, air travel volume and government contracting. Tropp contends that the latter testimony did not contradict his initial statement, but rather, supplemented and clarified it. (TS 56.1 ¶¶ 45-46; Tropp 56.1 ¶¶ 45-46.)
As in any other type of case, a grant of summary judgment under Rule 56 of the Federal Rules of Civil Procedure is appropriate in a patent case where no genuine issue of material fact exists and the movant is entitled to judgment as a matter of law. See Barmag Barmer Maschinenfabrik AG v. Murata Mach., Ltd., 731 F.2d 831 (Fed.Cir.1984) (summary judgment on issue of validity); Townsend Eng'g Co. v. HiTec Co., 829 F.2d 1086, 1089 (Fed.Cir. 1987) (summary judgment on issue of infringement). Summary judgment may be granted in favor of a moving party on an ultimate issue of fact where the party carries its burden of "pointing out to the district court that there is an absence of evidence to support the nonmoving party's case." Celotex Corp. v. Catrett, 477 U.S. 317, 325, 106 S.Ct. 2548, 2553, 91 L.Ed.2d 265 (1986). As further stated in Celotex, when "a party [ ] fails to make a showing sufficient to establish the existence of an element essential to that party's case, and on which that party will bear the burden of proof at trial. . . . there can be `no genuine issue as to any material fact,' since a complete failure of proof concerning an essential element of the nonmoving party's case necessarily renders all other facts immaterial." 477 U.S. at 322-23, 106 S.Ct. at 2552.
"When deciding issues in a patent case, a district court applies the law of the circuit in which it sits to nonpatent issues and the law of the Federal Circuit to issues of substantive patent law." In re Omeprazole Patent Litig., 490 F.Supp.2d 381, 399 (S.D.N.Y.2007) (citing Invitrogen Corp. v. Biocrest Mfg., L.P., 424 F.3d 1374, 1378-79 (Fed.Cir.2005)); see, e.g., Desenberg v. Google, Inc., No. 09-cv-10121, 2009 WL 2337122, at *5 (S.D.N.Y. July 30, 2009).
Summary judgment on the ground of noninfringement of a patent may be granted where the patentee's proof is deficient in meeting an essential part of the legal standard for infringement liability. See Johnston v. IVAC Corp., 885 F.2d 1574, 1577 (Fed.Cir.1989); Townsend Eng'g, 829 F.2d at 1089.
The Patent Act provides that "Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful
Title 35 U.S.C. § 271(a) provides that: "whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States or imports into the United States any patented invention during the term of the patent therefore, infringes the patent." A violation of § 271(a) constitutes "direct infringement."
"To establish [direct] infringement of a patent, every limitation set forth in a claim must be found in an accused product or process." IVAC, 885 F.2d at 1577. If a limitation is not found in a literal sense, or "exactly," the patent may still be infringed if the accused product or process contains the limitation's "substantial equivalent." Id. "Infringement under the doctrine of equivalents `does not require complete identity for every purpose and in every respect,' but does require substantial identity of function, means, and result." Lear Siegler, Inc. v. Sealy Mattress Co. of Mich., 873 F.2d 1422, 1425 (Fed.Cir.1989) (quoting Graver Tank and Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 609, 70 S.Ct. 854, 856, 94 L.Ed. 1097 (1950)).
Crucially, Federal Circuit "precedents draw a clear distinction between method and apparatus claims for purposes of infringement liability." Cardiac Pacemakers, Inc. v. St. Jude Med., Inc., 576 F.3d 1348, 1363 (Fed.Cir.2009). "Under section 271(a), the concept of `use' of a patented method or process is fundamentally different from the use of a patented system or device. . . . A method or process consists of one or more operative steps, and, accordingly, `[i]t is well established that a patent for a method or process is not infringed unless all steps or stages of the claimed process are utilized.' Because a process is nothing more than the sequence of actions of which it is comprised, the use of a process necessarily involves doing or performing each of the steps recited." NTP, Inc. v. Research In Motion, Ltd., 418 F.3d 1282, 1317-18 (Fed.Cir. 2005) (quoting Roberts Dairy Co. v. United States, 208 Ct.Cl. 830, 530 F.2d 1342, 1354 (1976)).
Customarily, "direct infringement requires a single party to perform every step of a claimed method." Muniauction, Inc.
In Muniauction, the Federal Circuit expanded on the "mastermind theory" set forth in BMC Resources, stating that "the control or direction standard is satisfied in situations where the law would traditionally hold the accused direct infringer vicariously liable for the acts committed by another party that are required to complete performance of a claimed method." Muniauction, 532 F.3d at 1329. Specifically, Muniauction—in which the patent at issue claimed an electronic method allowing municipal bond issuers to initiate and monitor bond auctions, and bidders to prepare, submit, and monitor bids—held that the fact that an alleged infringer merely "controls access to its system and instructs bidders on its use is not sufficient to incur liability for direct infringement." Id. at 1330. Examining and applying the holdings of BMC Resources and Muniauction, one district court held (in a decision later affirmed without discussion by the Federal Circuit), that "the third party must perform the steps of the patented process by virtue of a contractual obligation or other relationship that gives rise to vicarious liability in order for a court to find `direction or control.'" Global Patent Holdings v. Panthers BRHC LLC, 586 F.Supp.2d 1331, 1335 (S.D.Fla.2008) (emphasis added) (dismissing direct infringement claim because the defendant had no contractual relationship with the third parties who performed a step of the patented process, the third parties were not alleged to be the defendant's agents, and the plaintiff failed to allege "any fact which would render [d]efendant otherwise vicariously liable for the acts of [the third parties]"), aff'd, 318 Fed.Appx. 908 (Fed.Cir.2009) (per curiam).
In addition to its prohibition on direct infringement, 35 U.S.C. § 271 also provides, inter alia, that:
Violation of either of these subsections constitutes "indirect infringement." A claim for "[i]ndirect infringement, whether inducement to infringe or contributory infringement, can only arise in the presence of direct infringement, though the direct infringer is typically someone other than the defendant accused of indirect infringement." Dynacore Holdings Corp. v. U.S. Philips Corp., 363 F.3d 1263, 1272 (Fed. Cir.2004) (citing, e.g., Jansen v. Rexall Sundown, Inc., 342 F.3d 1329, 1334 (Fed. Cir.2003) (defendant vendor accused of indirect infringement based upon allegations that its customers directly infringed plaintiff's patent)).
The 537 and 728 patents undisputedly set forth multiple "steps" of the claimed method, as all method patents do. However, the number of steps is disputed. According to Travel Sentry, there are four steps, summarized as follows:
Travel Sentry's reading tracks the justification and spacing of the printed text of each independent claim of the 537 and 728 patents; each independent claim states "a method . . ., comprising:" followed by four paragraphs, demarcated by indentations, which correspond to Travel Sentry's four identified steps.
Travel Sentry's legal arguments boil down to these points: (a) Travel Sentry does not directly infringe because it does not perform any of the steps of the claimed method, much less all of them, either literally or equivalently; (b) Travel Sentry does not directly infringe because, to the extent that the actions of multiple third parties (i.e., its licensees and/or the TSA) combine to perform every step of the claimed method, Travel Sentry does not "mastermind" the conduct of those third parties; and (c) Travel Sentry does not indirectly infringe because no other third party unilaterally performs each and every step of the claimed method or masterminds others who do, and there can be no indirect infringement without direct infringement.
Travel Sentry argues that it does not perform step 1 because the TSA has not "agreed to process" Travel Sentry-marked locks "in accordance with a special procedure," noting that the MOU does not specify or obligate the TSA to follow any particular screening procedure, but merely asserts that the TSA will give a good faith effort to use the Travel Sentry master
Similarly, with respect to step 2, Travel Sentry argues that it does not know or purport to know whether a Travel Sentry-marked lock will be subjected by the TSA to any special opening procedure, and, in any event, all marketing of Travel Sentry-locked marks to consumers is accomplished by its licensees without control or direction on Travel Sentry's part. With respect to steps 3 and 4, Travel Sentry argues that these steps, if performed by anyone, must be performed by the TSA, who Travel Sentry does not direct or control. Further, Travel Sentry states that there is no reasonable basis to conclude that the TSA does perform these steps, as there is no evidence in the record regarding what, if anything, the Travel Sentry mark signals to any given TSA baggage screener or what specific actions a screener takes when opening a given piece of checked luggage, there is no "prior agreement" by the TSA to look for the Travel Sentry mark while screening baggage, and there is no "special procedure" that the TSA has agreed to use for the opening of Travel Sentry-marked locks.
According to Tropp, the claimed method is comprised of two steps. Like Travel Sentry, Tropp defines the first step as corresponding to the first paragraph of each independent claim, but Tropp collapses Travel Sentry's second, third and fourth steps (i.e., the second, third and fourth paragraphs of each independent claim) into a single step/paragraph:
Tropp characterizes the MOU as a "specific prior agreement" by the TSA to employ the "special procedure" of opening Travel Sentry-marked locks with Travel Sentry-provided master keys. He notes that Travel Sentry-marked locks cannot be manufactured or distributed ("made available") without the specific agreement and authorization of Travel Sentry and observes that, through its various contracts with licensees, Travel Sentry limits the products on which its trademark can be used, exerts complete control over quality and samples, and solely controls the creation, duplication and provision of master keys to the TSA. Further, Tropp contends that Travel Sentry itself "promotes" the locks to consumers because its own marketing materials and website explain the TSA's "special procedure" and its website identifies outlets for purchase of Travel Sentry marked products, and points out that Travel Sentry retains authority in its license agreements to approve all advertising,
Based on this reasoning, Tropp argues that there is sufficient evidence to raise genuine issues of material fact regarding whether Travel Sentry "makes available" and/or "markets" dual-access special locks to consumers in the manner claimed in his patents, whether it induces any of its licensees to perform each of those steps, and whether it directs or controls the activities of third parties—its licensees and the TSA—who together perform all the steps of the patented method, and accordingly, summary judgment of noninfringement is inappropriate.
As an initial matter, the Court addresses the disagreement regarding the steps defined in Tropp's patented process. Although this was not previously raised as a disputed point at the claim construction stage of the proceedings, it is nevertheless a claim construction issue within the Court's bailiwick. See generally Markman v. Westview Inst., Inc., 517 U.S. 370, 376-78, 116 S.Ct. 1384, 1389-90, 134 L.Ed.2d 577 (1996); Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed.Cir.2005) (en banc). The Court's role in performing claim interpretation is not limited to defining isolated words or phrases, but extends to determinations regarding the overall scope and nature of the claimed process. See, e.g., Leighton Techs. LLC v. Oberthur Card Sys., S.A., 358 F.Supp.2d 361, 366 (S.D.N.Y.2005) (noting that, for process claims, claim interpretation may involve ascertaining whether the steps must be performed in a specific order) (citing Altiris, Inc. v. Symantec Corp., 318 F.3d 1363, 1369-70 (Fed.Cir.2003)). And, quite obviously, both sides believe that this particular determination is pivotal since, so long as at least one step of the method is performed entirely by the TSA, Travel Sentry cannot possibly directly infringe by performing all of the steps of the method. Also, it cannot directly infringe on a "mastermind" theory unless it controls the TSA's performance of its step. "When the parties present a fundamental dispute regarding the scope of a claim term, it is the court's duty to resolve it." O2 Micro. Intern. Ltd. v. Beyond Innovation Tech., Co., 521 F.3d 1351, 1362 (Fed.Cir.2008).
While claim construction begins with the claims themselves, which "provide substantial guidance as to the meaning of particular claim terms," the claim terms must further be considered in the context of the patent as a whole, including the specification. See Phillips, 415 F.3d at 1312-13 (citing Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed.Cir.1996)), 1315. The plain, ordinary and contextually reasonable meanings of claim terms are presumed to have been intended, unless an inventor has clearly and deliberately assigned different meanings elsewhere in the patent or in the prosecution history. See Phillips at 1316; ACTV, Inc. v. Walt Disney Co., 346 F.3d 1082, 1088 (Fed.Cir. 2003). The ordinary meaning of a "step" in this context is "a stage in a gradual, regular or orderly process," or "an action, process, or measure often occurring as one in a series." Merriam-Webster's Third New Int'l Dictionary of the English Language 2236 (2002); see also Leighton Techs. LLC v. Oberthur Card Sys., S.A., 358 F.Supp.2d 361, 377 (S.D.N.Y.2005) (noting that "step" is a "plain English, utterly non-technical" word and construing
Notably, although the parties both interpret the independent claims in the 537 and 728 patents as setting forth multiple steps of a process, the claims themselves do not mention "steps" at all. They simply state that the claimed method is "comprised of" elements described in four separate and discrete (albeit unnumbered or unlettered) paragraphs. The ordinary meaning of "comprise" in this context is "to consist of; be made up of;" or "to include, esp. within a particular scope." Merriam-Webster's Third New Int'l Dictionary of the English Language 467 (2002); see also Leighton Techs., 358 F.Supp.2d at 377. The first and second of the four paragraphs, which undisputedly constitute the first and second steps of the method, describe the actions of "making available" and "marketing" locks to customers, without specifying that those actions are to be performed by any particular type of person or entity. The third and fourth paragraphs, which Travel Sentry contends are also "steps" and Tropp contends are not, specifically describe actions to be taken by a luggage screening entity in the course of performing luggage screening (recognizing a signal denoting a special lock, and looking for and opening locks with that signal with a master key). Based on the presentation and substance of the patent claims (drafted by Tropp himself), the Court finds it obvious that Tropp's claimed method consists of four steps, the last two of which are performed by a screening entity.
The patent specifications are in harmony with this interpretation. Under the heading "Detailed Description of the Preferred Embodiment," the 537 patent states, inter alia, "[t]he method of the present invention includes the step of making a special lock available to airline travelers . . .," and "[T]he method of the present invention also includes the step of providing the luggage screening authority, directly or indirectly, with access to the master key." However, these portions take up only a small part of the description section, which also extensively addresses the power, needs and interests of the TSA, the types of locks that might be employed as part of the method, the benefits and attractiveness of the system to travelers, and so on. Moreover, by stating that the method "includes" certain steps, the description tacitly acknowledges that there may very well be other steps to which it has not called attention, see Merriam-Webster's Third New Int'l Dictionary of the English Language 1143 (2002) (defining "include" as "to place, list or rate as a part of a whole or of a larger group" (emphasis added)), and at the conclusion of the section there is an express and emphatic disclaimer that the description is in no way exhaustive or complete. Further, elsewhere in the 537 patent, 18 "Important Objects and Advantages" are articulated, each one of which spells out a way in which the claimed method will streamline the process and/or ameliorate the negative side effects of baggage screening performed by the TSA. For example, the first "important object and advantage" is "to provide a method of screening luggage at airports that avoids forcible opening of the luggage." Other purported benefits of the proposed method are that it would "reduce[ ] the costs of the luggage screening authority," "reduce[ ] injuries to baggage screeners," "reduce[ ] the liability to the luggage screening authority," "not interfere with current policy of the luggage screening authority," "decrease[ ] the labor of luggage screeners," "provide[ ] a public relations benefit to the TSA or luggage screening authority," and "allow[ ] the luggage screening authority to get its work done more efficiently."
Accordingly, the Court accepts Travel Sentry's interpretation that there are four steps of the claimed method, and the last two must be performed by the TSA. Tropp does not allege that the TSA (or its equivalent) either "makes available" or "markets" special locks to consumers. Thus, even assuming arguendo that Tropp has demonstrated a material question of fact as to whether Travel Sentry performs and/or directs or controls its licensee' performance of each of those two steps, either literally or under the doctrine of equivalents, his direct infringement claim against Travel Sentry is only viable if there is sufficient evidence to permit a reasonable jury to infer that Travel Sentry directs and controls the TSA's performance of the additional steps of the method. The record provides no such basis.
Although the MOU may arguably be deemed adequate to constitute a "prior agreement" between Travel Sentry and TSA within the meaning of the 537 and 728 patents, it is insufficient to establish the "control or direction" requirement for joint infringement liability established by the Federal Circuit in BMC Resources and Muniauction. Quite simply, Tropp points to no evidence at all that could morph this relatively noncommittal "understanding" between Travel Sentry and the TSA into a contract that renders Travel Sentry vicariously liable for the TSA's actions. See Global Patent Holdings, 586 F.Supp.2d at 1335 (stating that "the third party must perform the steps of the patented process by virtue of a contractual obligation or other relationship that gives rise to vicarious liability in order for a court to find `direction or control'"). The MOU reflects that Travel Sentry agreed merely to provide the TSA, gratis, with master keys to Travel Sentry certified locks and training guidance on how to identify those locks on checked luggage and, if necessary, open them using the master keys, and that, in return, the TSA merely agreed to test the keys and, if it found them satisfactory, to make a "good faith effort" to use the keys to open bags whenever the TSA found it "practicable" to do so. Under the terms of the MOU, however, the TSA is not subject to any concrete or enforceable obligation to use the master keys at all, and it is expressly absolved of liability for any locks that are damaged during the screening process notwithstanding Travel Sentry certification. The MOU does not provide for any consequences of a failure to comply, and either party can unilaterally terminate it at will. Essentially, all that the MOU proves is that Travel Sentry facilitates the TSA's access to Travel Sentry's lock system (i.e., supplies it with the master keys and provides instructions and guidance to TSA screeners on how to use the system). This is precisely the type of relationship which the Federal Circuit in Muniauction deemed inadequate to support a claim of direct infringement against any party. See Muniauction, 532 F.3d at 1329 (stating that the fact that an alleged infringer merely "controls access to its system and instructs [third parties] on its use is not sufficient to incur liability for direct infringement.").
For the foregoing reasons, the Court grants summary judgment to Travel Sentry on its claim of noninfringement and dismisses the Travel Sentry Action with prejudice.
Lastly, in light of the Court's finding of noninfringement in the Travel Sentry Action, it appears that Tropp's infringement claims against the licensee defendants in the Licensee Action are barred by collateral estoppel and/or res judicata. Accordingly, on or before September 24, 2010, Tropp is ordered to show cause why the Licensee Action should not be dismissed as a result of this Order, and any reply by any or all licensee defendants shall be
